Author(s)

Kotaro Kageyama

Kageyama International Law & Patent Firm, Tokyo, Japan.

Regarding the criteria for determining the inventive step or nonobviousness (unobviousness) for a patent requirement of a patent invention, the conventional approach in the court decisions and examination standard of Japan, USA and EPO focused on acts, for example, whether or not the act to invent in the invention claimed in the application was “suggested” or “motivated” by the prior arts. On the other hand, Author regarded “conception based on a principle” and “establishment of a model” as the most important stage by analyzing the formation process of an invention. Especially, principles (typically in physics and chemistry) are important; furthermore, they are objective as the object of acts of the inventions. Therefore, I would like to propose a way in order to compare the applied invention with the prior arts. That is, we should set the “principle” and “ways of their utilization” as the object to analyze and judge their difference between the said invention and the arts. If the degree of the difference is large, an inventive step can be recognized. Because the problem to be solved does not consist of the contents of an invention, it should not be focused too much. In this article, the various factors in order to recognize differences with reference to principles and ways of their utilization were explained in a good order. Because the determination of the principles and their utilization seems to be made more objectively compared to that of acts, it can exclude hindsights. Up to now, this kind of discussion in this article has not yet been made.

Patent Invention, Patent Requirements, Inventive Step, Nonobviousness (Unobviousness), Could-Would Approach

Kageyama, K. (2016) Determining Inventive Step or Nonobviousness for a Patent Requirement in View of the Formation Process of an Invention. Beijing Law Review, 7, 238-260. doi: 10.4236/blr.2016.73023.